DETAILED ACTION
Applicant's election with traverse of Group II in the reply filed on 7/23/26 is acknowledged. The traversal is on the ground(s) that the inventions are interrelated and a proper search of Group II would require a search of Group I. This is not found persuasive because patent application prosecution requires much more than simply searching. For instance, as can be seen from below, the determination of patentability for Group II is different from that of Group I. Likewise, IF Groups I and II were rejected over prior art different amendments/arguments could be presented to overcome such rejections. This emphasizes the fact that production of multiple groups would, in fact, pose to be an undue burden on the Examiner
Please note that, in response to this traversal and the determination of allowable subject matter, Groups III and IV (claims 13 to 15) have been rejoined.
The requirement is still deemed proper and is therefore made FINAL.
Note that claim 4 depends upon the method of claim 2, which is withdrawn from prosecution as being directed to a non-elected species. As such claim 4 must be amended and placed into independent form before this application can pass to issue.
Claims 4 to 15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As was noted in the restriction requirement, the formula in claim 2 (from which
claim 4 depends) and in claim 5 is improper. Claim 5 contains an unintended N-N bond while claim 2 has multiple “n” groups that are improper.
The instant claims are neither taught nor suggested. The closest prior art includes the teachings in Nowak et al. (6,906,117) and Leir et al. (7,500,184). Nowak et al. teach polysiloxanes having terminal aziridine groups which are prepared by the general processes found in column 11, lines 36 and on. This process generally involves functionalizing a silicone to give an aziridine terminal group. This does not provide sufficient motivation for the skilled artisan to select an aminoalkylaziridine as found in c) in claim 4 and react it with a silicone meeting the formula in b) in claim 2, containing Z leaving groups. For instance the reactions found in the working examples include an addition reaction between a methacrylate and an aziridine. While Nowak et al. is not limited to or by the working example, this exemplified teaching in combination with the teachings noted in column 11 simply would not provide motivation for the skilled artisan to select reactants having the -C=O-C=O=Z and the aminoalkyl reactive group in the aziridine as claimed. In addition to this difference, the backbone in Nowak et al. differs from that claimed in that it does not contain oxamide groups as are found in the formula in claim 5 or the reactant in claim 2. Leir et al. teach polysiloxane oxamides but there is no terminal Z group and there is no suggestion of a reaction such as that found in claim 4, resulting in the silicone of claim 5. The Examiner considered motiva-tion to include the backbone in Leir et al. into the siloxane of Nowak et al. but given the different utilities of these references and the prior art (one for a hot melt adhesive, one for providing a specific curable composition for dental preparation one for thermal gap filler) and the lack of clear motivation to form and react monomers as found in claim 4, resulting in the polymer of claim 5, the Examiner determined that there is no basis to conclude that one having ordinary skill in the art would have found such a combination obvious with the teachings and motivation provided only by the prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831. Information regarding the status of published or unpublished applications may be obtained from Patent Center.
Mgm
9/5/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
Prosecution Insights